Ex Parte Shelton

Patent Trial and Appeal Board

Sep 11, 2017

12177019 (P.T.A.B. Sep. 11, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/177,019 07/21/2008 Jaye Shelton 07-BHA178-US-NP 3654
26721 7590 09/25/2017
LEGAL DEPT., IP GROUP
M-I L.L.C.
10001 Richmond Avenue
IP Administration Center of Excellence
HOUSTON, TX 77042
EXAMINER
THOMPSON, KENNETH L
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
09/25/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
U S Docketing @ sib. com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAYE SHELTON
Appeal 2016-006011
Application 12/177,019
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 21—40 under
35 U.S.C. § 134(a). Appeal Brief 13—27. We have jurisdiction under
35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to “apparatuses and methods for providing
seal during drilling operations.” Specification, paragraph 1.
Appeal 2016-006011
Application 12/177,019
Illustrative Claim (disputed limitations emphasized)
21. A method, comprising:
providing a control device comprising a first sealing element configured
to seal around and rotate with a drillstring extending through a central bore
of the control device;
replacing the first sealing element of the control device with a removable
adjustable sealing device having at least one non-rotating sealing element
configured to seal around an outer surface of and not rotate with the
drillstring.
Rejections on Appeal1
Claims 21, 28—34, 37, 38, and 40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Seamark (US Patent 1,942,366; issued
January 2, 1934). Final Rejection 7—8.
Claims 22 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Seamark. Final Rejection 8.
Claims 23, 24, and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Seamark and Relton (US Patent Application
Publication 2003/0193329 Al; published October 16, 2003). Final
Rejection 9.
Claims 25—27 and 36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Seamark, Cugini (US Patent 3,561,723; issued February 9,
1971) and Hopper (US Patent 7,274,989 B2; issued September 25, 2007).
Final Rejection 9—11.
1 In the Answer, the Examiner withdraws the 35 U.S.C. § 112 (pre-AIA),
first paragraph, rejection of claims 21—40. See Answer 2.
2
Appeal 2016-006011
Application 12/177,019
ANALYSIS2 3
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed October 20, 2015), the Reply Brief (May
23, 2016), the Final Rejection (mailed February 23, 2015) and the Answer
(mailed March 21, 2016) for the respective details.
Group I (Claims 21 and 22)
Appellant contends the “rotary blow-out preventer of Figure 1
includes a seal (elastic sleeve d) that may rotate” and the “sleeve packer of
Figure 2 includes a seal that does not rotate” and further contends the
“sealing devices in Seamark Figure 1 and Seamark Figure 2 are completely
separate and distinct devices, namely a rotary blowout preventer and a
sleeve packer.” Appeal Brief 14. The Examiner finds that although
“Seamark does not specifically state verbatim the word replace when
referring to the alternative use of the rotating and non-rotating sealing
devices” that “it would have been obvious to one having ordinary skill in the
art to substitute or replace one known device for sealing around a drillstring
with another well known sealing device for sealing around a drill string to
achieve predictable results.” Final Rejection 8. Appellant argues this
finding is in error, because the“claims do not require simple substitution of a
blowout preventer for a sleeve packer.” Appeal Brief 19.
2 “Appellant respectfully submits that [] claims 21 and 22 stand or fall
together; claims 28-34 and 37 stand or fall together; and claims 38-40 stand
or fall together. Appellant respectfully traverses the rejections separately in
3 subheadings, Groups I-III. Group I consists of claims 21 and 22; Group II
consists of claims 28-34 and 37; and Group III consists of claims 38-40.”
Appeal Brief 13.
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Application 12/177,019
Appellant argues the “claims relate to providing a control device with
a first sealing element and replacing the sealing element with a removable
adjustable sealing device” and, therefore, the “method according to
independent claim 21 does not include simple substitutions of control
devices, as alleged by the Examiner, but rather, a replacement of a first
sealing element in a control device with a different type of sealing element
(i.e., a removable adjustable sealing device) within the control device.”
Appeal Brief 19. Appellant argues:
Further, because the structure of each equipment unit in Seamark
is configured to secure and operate the sleeve d in a different
manner (e.g., the blowout preventer in Fig. 1 is configured to
rotate a sleeve i secured therein, and the sleeve packer in Fig. 2
is configured to non-rotatably secure a sleeve d), one would not
be able to replace a rotating sealing element with a non-rotating
sealing element in an equipment unit of Seamark. In other words,
because it is the equipment unit structure that either rotates or
does not rotate a sealing element, replacing the sleeve d from one
equipment unit type (e.g., the blowout preventer in Fig. 1 or the
sleeve packer in Fig. 2) with the sleeve d from a different
equipment unit type would not result in exchanging a rotating
sealing element with a non-rotating sealing element.
Appeal Brief 19.
We are not persuaded the Examiner erred in finding the disputed
limitations are obvious in view of Seamark. Appellant states support for
replacing the sealing element with a removable adjustable sealing element
configured to seal and not rotate with the drillstring is found in paragraphs
21 and 31 of the Specification. Appeal Brief 3. Paragraphs 21 and 31 are
reproduced below in their entirety for clarity:
In selected embodiments, sealing element 220 may be at least
partially disposed within chamber 214 of housing 210 and
configured to seal around drill string 10, which may result in
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Application 12/177,019
sealing the wellbore that is in fluid communication with
adjustable sealing device 200. For example, sealing element 220
may deform against an outer surface 12 of the drill string 10
extending through the adjustable sealing device 200, thereby not
allowing pressure within the well bore to be released through the
adjustable sealing device 200. As such, the sealing element 220
may include rubber, metal, or any other deformable materials
that allow sealing element 220 to form a seal around the drill
string 10. Further, in selected embodiments, sealing element 220
may comprise a single piece of material, whereas in other
embodiments, sealing element 220 may include multiple pieces
of material coupled together to form a seal around drill string 10.
Specification, paragraph 21.
Embodiments disclosed herein may provide for one or more of
the following advantages. In particular, embodiments of the
present disclosure enable an adjustable sealing device (e.g., 200,
300, 400) to be used in conjunction with an RCD to prevent
premature wear of the stripping element (e.g., 31). If, during a
drilling operation using an RCD, the drill string is to be retrieved,
the stripping element may be removed and replaced with an
adjustable sealing device in accordance with embodiments
disclosed herein. As such, the adjustable sealing device (e.g.,
200, 300, or 400) would be capable of adjusting the pressure of
fluid (230, 330, or 440) when upset threaded connection joints
are passing therethrough so that sealing elements (220, 320, or
420) are not damaged. Once the trip in or trip out operation is
completed, the adjustable sealing device may be retrieved and
the stripping element reinstalled.
Specification, paragraph 31.
Neither paragraph discloses, with any specificity, replacing a rotating
sealing element with a non-rotating sealing element. The Examiner finds
Seamark teaches the utilization of both rotating and non-rotating sealing
devices. Final Rejection 7—8. We do not find Appellant’s argument that
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Application 12/177,019
“claim 21 does not include simple substitutions of control devices”
persuasive because (1) the Examiner does not substitute Seamark’s control
devices for one another, rather the Examiner finds the sleeve employed in
each device can be interchanged with one another; (2) claim 21 does not
recite with any specificity how replacing the sealing element with a
removable adjustable sealing device is accomplished such that it precludes
mere substitution.3 See Appeal Brief 19; Final Rejection 7—8.
Subsequently, we sustain the Examiner’s obviousness rejection of
independent claim 21 and dependent claim 22.4
Group II (Claims 28-34 and 37)
Appellant contends, “independent claim 28 recites, in part, ‘a control
device configured to interchangeably receive: a first sealing device including
a sealing element that seals around an outer surface of and rotates with a
drill string extending through a central bore of the control device, and a
removable adjustable sealing device.’” Appeal Brief 22. Appellant further
contends that support for the recited claim limitation is found in paragraphs
3, 4, 21, and 31 of the Specification. Appeal Brief 3^4. Both paragraphs 3
3 The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
4 “As our precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int 7 v. Teleflex Inc.,
550 U.S. 398,418 (2007).
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Appeal 2016-006011
Application 12/177,019
and 4 are located in the Background Art section of Appellant’s Specification
and neither paragraph discloses anything of consequence pertaining to the
patentability of the recited claim limitation other than disclosing that rotating
control devices are well known in the art. We have already addressed the
lack of specificity of paragraphs 21 and 31 above.
Appellant argues modifying Seamark in the manner described by the
Examiner would “result in the deconstruction of the equipment unit, making
it no longer capable of receiving a sealing element,” Appeal Brief 21.
Appellant further argues:
It would not have been obvious to redesign and reconfigure the
equipment units disclosed in Seamark to interchangeably receive
a first sealing device and a removable adjustable sealing device
because Seamark teaches configuring the structure of the
equipment unit to secure a single type of sealing element and
because Seamark teaches cooperatively forming the components
that allow a sealing element to be manipulated into the structure
of the equipment unit.
Appeal Brief 22.
We do not find Appellant’s arguments persuasive because the test for
obviousness is not contingent upon bodily incorporating the structure of one
embodiment into the structure of the other embodiment; “nor is it that the
claimed invention must be expressly suggested in any one or all of the
references.” See In re Keller, 642 F.2d at 425. “( T]he test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d at 425; cf. Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984) (“Neither is the
practitioner in reading the [] patent disclosure compelled to adopt every
single aspect of its teaching without the exercise of independent
judgement”). Consequently, we agree with the Examiner’s findings for
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Application 12/177,019
reasons stated above and sustain the Examiner’s obviousness rejection of
claim 28, as well as, dependent claims 29 34 and 37 that stand and fall
togetner. bee Appeal id.
Group III (Claims 38^40)
Appellant contends “independent claim 3 8 recites, in part, ‘removing
the first sealing element from the control device’ and ‘removably connecting
an adjustable sealing device within the control device.’” Appeal Brief 25.
Appellant further contends that support for the recited claim limitation is
found in paragraphs 3, 4, 21, and 31 of the Specification. Appeal Brief 4.
Both paragraphs 3 and 4 are located in the Background Art section of the
Background section of Appellant’s Specification and neither paragraph
disclose anything of consequence pertaining to the patentability of the
recited claim limitation other than disclosing that rotating control devices are
well known in the art. We have already addressed the lack of specificity of
paragraphs 21 and 31 above. Appellant argues:
It would not have been obvious to redesign and reconfigure the
equipment units disclosed in Seamark to interchangeably receive
a first sealing device and a removable adjustable sealing device
because Seamark teaches configuring the structure of the
equipment unit to secure a single type of sealing element and
because Seamark teaches cooperatively forming the components
that allow a sealing element to be manipulated into the structure
of the equipment unit.
Appeal Brief 25.
We do not find Appellant’s arguments persuasive for the reasons
stated above in regard to independent claims 21 and 28 both commensurate
in scope with claim 38. Consequently, we agree with the Examiner’s
findings for reasons stated above and sustain the Examiner’s obviousness
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Application 12/177,019
rejection of claim 38, as well as, dependent claims 39 and 40 that stand and
fall together. See Appeal Brief 13.
Dependent claims 23-27,35, and 36
Appellant argues that Relton, Cugini, and Hopper fails to address the
noted deficiency of Seamark and, therefore, obviousness rejections should
be overturned. Appeal Brief 25—27. We do not find Appellant’s argument
persuasive because we did not find Seamark deficient. Consequently, we
agree with the Examiner’s findings for reasons stated above and sustain the
Examiner’s obviousness rejection of dependent claims 23—27, 35, and 36.
DECISION
The Examiner’s obviousness rejections of claims 21—40 are sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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